Geographical Indications & Similar Signs

Trademarks / Trademark Law / Geographical Indications

By Ian Jay Kaufman [*]

Introduction
Certification Marks
Collective Marks

Introduction

The TRIPS Agreement [2] defines and specifies the minimum standards of protection that World Trade Organization Members must provide for Geographical Indications (“GIs”). [3] GIs are a kind of intellectual property, defined as “indications, which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” [4] Such goods may be agricultural, natural or manufactured, typically consisting of the name of the place of origin of the goods. Examples of GIs from India include DARJEELING tea, BASMATI rice and KOHHLAPARI slippers. Other examples of GIs include TUSCANY olive oil in Italy, ROQUEFORT cheese in France, and IDAHO potatoes in the United States.

The TRIPS Agreement requires that WTO Members provide the legal means for interested parties to prevent:

“(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; or

(b) constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris Convention (1967).” [5]

The TRIPS Agreement also provides for a greater level of protection for GIs that identify wines and spirits. Even if a GI for a given wine or spirit would not deceive the public, a GI may not be used if the wine or spirit does not originate in the place indicated by the GI. [6] Some individuals, including those from India, have argued that this broader protection should not only be applicable to wines and spirits, but for other goods as well. [7]

The TRIPS Agreement provides several specific exceptions to the general rules governing GIs. For instance, the TRIPS provisions do not require protection of a “generic” GI name. The word CHABLIS, for example, is often used to refer to any sort of white wine in the United States. Since CHABLIS is a generic term in the United States, the United States can continue to permit use of the word CHABLIS as a synonym for “white wine.” The same is true in the United States for CHAMPAGNE and DIJON. CHAMPAGNE and DIJON are considered, despite French efforts to the contrary, to be unprotected descriptive terms in the United States for sparkling wine and mustard, respectively, principally as it was considered as grossly unfair, after so many years of using the “generic” terms, to force this usage to stop and other names to be used instead.

Another exception to the protection afforded GIs involves preexisting trademarks. A trademark that is identical or similar to a GI is allowable if:

“a trademark has been applied for or registered in good faith, or where the rights to a trademark have been acquired through actual use in good faith, either before the date of application of [the TRIPS Agreement in a particular WTO member]; or before the Geographical Indication is protected in its country of origin....” [8]

To meet its obligations under the TRIPS Agreement, [9] both houses of India’s Parliament passed “The Geographical Indications of Goods (Registration and Protection) Act of 1999,” which, as of the date of this writing, is expected to be enacted although the precise date is unclear. More specifically, the Act defines a geographical indication as:

“an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in [a] case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.” [10]

Also consistent with the TRIPS Agreement, the Act sets forth the following with respect to the relationship between trademarks and GIs:

“Where a trade mark contains or consists of a geographical indication and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where the rights to such trade mark have been acquired through use in good faith either—

(a) before the commencement of this Act; or
(b) before the date of filing the application for registration of such geographical indication under this Act;

nothing contained in this Act shall prejudice the registrability or the validity of the registration of such mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such geographical indication.” [11]

It should be emphasized that India’s embrace of the TRIPS Agreement and WTO is aimed to, and this author believes should, significantly advance the country’s commercial interests.” [12]

The potential troublesome impact of protecting GIs, in relationship to trademarks, is raised by the situation involving the trademarks BUDWEISER and BUD, marks used to identify the well-known beer produced by the Anheuser-Busch Company. Although Anheuser-Busch has been producing beer in the United States under the BUDWEISER trademark since at least 1876, the Czech Republic claims that the terms BUDWEISER and BUD are geographical indications for beer from the town of Ceske Budejovice. Citing GI law provisions, the Czech Republic has successfully canceled Anheuser-Busch’s trademark registrations for BUDWEISER and/or BUD in Austria, Israel, Portugal, and Switzerland although Anheuser-Busch’s has been successful in protecting this mark in several other jurisdictions, recently, for example, in Russia with respect to their BUD mark.

[*] Ian Jay Kaufman, a resident partner in the New York office of the multinational law firm Ladas & Parry, has written extensively on Intellectual Property issues. The author acknowledges the assistance of Michael D. Stewart, Esq. and Joseph G. Walsh, Esq., associates in Ladas & Parry’s New York office, in the writing of this paper, which was first presented by Dr. Kaufman at conferences held in New Delhi & Hyderabad, India in January 2002. Copyright Ian Jay Kaufman 2001. All Rights Reserved.

[2] TRIPS Agreement, Pt. II, § 3 at Arts. 22-24.

[3] The World Trade Organization was established on January 1, 1995 pursuant to the Uruguay Round of the General Agreement on Tariffs and Trades (GATT) which had concluded in 1994. India was a founding member of GATT in 1947 and a founding member of the WTO.

[4] TRIPS Agreement. Pt. II, § 3, Art. 22.

[5] Id. at Article 22(2).

[6] Id at Article 23.

[7] See, e.g WIPR, October, 2000 (Pursuant to Article 24.1 of the TRIPS Agreement, a proposal was drafted involving India, Switzerland and the Czech Republic regarding the need to initiate talks to increase the protections of GIs for Basmati rice, Swiss-style hand creams, and cheese).

[8] Id. at Article 24(5).

[9] There was a timetable for WTO member countries to fulfill the provisions of the TRIPS Agreement with developing countries, such as India, scheduled to have had until January 1, 2000 to comply with the TRIPS standards for Geographical Indications. Developed and least developed countries were given earlier and later deadlines, January 1, 1996 and January 1, 2006, respectively, to reach compliance.

[10] Chapter 1, Section 2(1)(e).

[11] Id. at 26(1).

[12] Of interest, please note the following statement from The Embassy of India: “India’s participation in an increasingly rule based system in the governance of international trade is to ensure more stability and predictability, which ultimately would lead to more trade for itself and the 134 other nations which now comprise the WTO. India also automatically avails itself of MFN [most favored nation] and national treatment for its exports to all WTO members.” Policy Statement, Embassy of India (website as noted on September 30, 2001).

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